UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FUJIFILM Corporation et al.
`Petitioners
`
`v.
`
`Papst Licensing GmbH & Co., KG,
`Patent Owner
`
`CASE: IPR2016-01200
`Patent No. 8,504,746
`
`PETITIONERS’ REPLY TO PATENT OWNER RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FUJIFILM Corporation et al.
`Petitioners
`
`v.
`
`Papst Licensing GmbH & Co., KG,
`Patent Owner
`
`CASE: IPR2016-01200
`Patent No. 8,504,746
`
`PETITIONERS’ REPLY TO PATENT OWNER RESPONSE
`
`
`
`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................ 1
`I.
`CLAIM CONSTRUCTION ......................................................................... 3
`II.
`III. PAPST'S ARGUMENTS ARE DIRECTED TO IRRELEVANT
`AND UNCLAIMED FEATURES; THE RELEVANT FACTS
`SHOWING UNPATENTABILITY ARE UNDISPUTED. ....................... 9
`A.
`Papst Does Not Dispute the Relevant Fact: Aytac’s System is
`Capable of Automatically Transferring At Least One File
`Without Requiring any Specialized File Transfer Software, and
`Thus Meets the “Automatic File Transfer Process” Limitation. ........ 11
`The “Synchronization” and “Cache” Concerns Addressed by
`Aytac’s Advanced System are Not Implicated by the ’746
`Patent’s Claimed File Transfer. .......................................................... 15
`No Modification of Aytac is Required. .............................................. 19
`C.
`IV. CONCLUSION ........................................................................................... 21
`
`B.
`
`ii
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Celsis In Vitro, Inc. v. CellzDirect, Inc.,
`664 F.3d 922 (Fed. Cir. 2012) .................................................................... 8, 9, 20
`
`Geo. M. Martin Co. v. All. Mach. Sys. Int’l LLC,
`618 F.3d 1294 (Fed. Cir. 2010) ............................................................................ 8
`
`In re Heck,
`699 F.2d 1331 (Fed. Cir. 1983) ............................................................................ 9
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................ 21
`
`SAS Institute, Inc. v. Complementsoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 3
`
`Z4 Techs., Inc. v. Microsoft Corp.,
`507 F.3d 1340 (Fed. Cir. 2007) ............................................................................ 6
`
`iii
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
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`PETITIONERS’ EXHIBIT LIST
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`Ex. 1001 Declaration of Dr. Paul F. Reynolds, Ph.D.
`
`Ex. 1002 Curriculum Vitae of Dr. Paul F. Reynolds, Ph.D.
`
`Ex. 1003 U.S. Patent No. 8,504,746 to Michael Tasler (“the ’746 Patent”).
`
`Ex. 1004 U.S. Patent No. 5,758,081 to Haluk M. Aytac (“Aytac” or “the ’081
`Patent”).
`
`Ex. 1005 American National Standard for Information Systems, Small
`Computer System Interface-2, ANSI X3.131-1994 (1994)
`(“SCSI Specification”).
`
`Ex. 1006
`
`Prosecution History of the ’081 Patent.
`
`Ex. 1007
`
`Excerpts from the Prosecution History of the ’746 Patent.
`
`Ex. 1008 MPEP 6th ed., Rev. 1, Sept. 1, 1995, § 608.05.
`
`Ex. 1009
`
`Patent Owner (“Papst”)’s Opening Claim Construction Brief and
`Declaration of Robert Zeidman, filed in related litigation in the
`District of Columbia. In re: Papst Licensing Digital Camera Patent
`Litigation, MDL No. 1880, Case No. 1:07-mc-00493, Dkt. Nos. 630,
`630-12 (June 3, 2016).
`
`Ex. 1010 Ray Duncan, ed., “The MS-DOS Encyclopedia,” Microsoft Press
`(1988).
`
`Ex. 1011
`
`Federal Circuit decision, In re: Papst Licensing Digital Camera
`Patent Litigation, No. 2014-1110 (Fed. Cir. Feb. 2, 2015).
`
`Ex. 1012 American National Standards Institute, Procedures for the
`Development and Coordination of American National Standards,
`Approved by the ANSI Board of Directors (Sept. 9, 1993).
`
`Ex. 1013 Deposition Transcript of Thomas A. Gafford taken May 31, 2017.
`
`iv
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`I.
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`INTRODUCTION
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`Instead of disputing Petitioners’ evidence or arguments, Papst attempts to
`
`save the Challenged Claims by rewriting those claims and rebutting arguments Pe-
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`titioners never made.1 Petitioners’ actual obviousness argument, however, is con-
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`firmed on every single point by both sides’ expert witnesses in their declarations
`
`and deposition testimony.
`
`The Petition focused on what the ’746 Patent actually claims: the capability
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`to transfer “at least one file” or “data” from an analog data generating and pro-
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`cessing device (“ADGPD”) to a computer “without requiring any user-loaded file
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`transfer enabling software to be loaded on or installed in the computer.” Petition-
`
`ers argued and proved that the primary prior art reference (Aytac), augmented by
`
`additional details about SCSI communications disclosed in the secondary refer-
`
`ences, unambiguously teaches this claim limitation. Paper 1 (“Petition”) at 2-3,
`
`23-24, 37-70. Remarkably, Papst never disputes any of Petitioners’ evidence
`
`showing how Aytac’s system can transfer “at least one file” without requiring any
`
`user-installed software on the computer.
`
`1 The Board instituted trial on claims 1, 6, 15, 17, 18, 31 and 34 (the “Challenged
`
`Claims”) of the “’746 Patent.”
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`Aytac’s preferred embodiment also discloses additional beneficial features,
`
`such as synchronization and cache disabling/clearing. Id. at 31. Papst tries to rely
`
`on these additional features to save the Challenged Claims. Papst’s argument goes
`
`like this: Aytac’s additional features require additional software on the computer,
`
`it would not have been obvious to remove that software, and this violates the Chal-
`
`lenged Claims’ negative “without requiring any user-loaded file transfer enabling
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`software” limitation. Paper 12 (“Response”) at 1-2.
`
`But the Challenged Claims do not incorporate Aytac’s additional features,
`
`which are improvements beyond anything disclosed or claimed in the ’746 Patent.
`
`The claims require only the transfer of “at least one file” or “data.” The ’746 Pa-
`
`tent does not claim “synchronization” among multiple simultaneous requests to the
`
`ADGPD’s memory. The ’746 Patent does not claim any cache disabling or clear-
`
`ing function on the computer to prevent certain possible errors that may occur after
`
`file transfer. Yet Papst’s argument is that Aytac requires specialized software to
`
`accomplish these synchronization and cache disabling functions and thus work “re-
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`liably.” Papst’s argument is self-defeating. Papst’s expert witness made clear in
`
`his declaration, and confirmed in his deposition testimony, that the Aytac system
`
`could automatically transfer a file without encountering any problems from lack of
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`synchronization or cache disabling. Indeed, the “cache” problem by necessity
`
`could only occur after a successful file transfer.
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`Papst’s argument that it would not have been obvious to modify Aytac’s dis-
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`closure to remove software just knocks down a straw man. Petitioners did not pro-
`
`pose any such modification. Because Aytac’s unique software is not “required” to
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`transfer “at least one file,” or “data,” it makes no difference whether or not it is
`
`present on the computer, so Petitioners need not show that removing the software
`
`would have been obvious. All of Papst’s attacks on an obviousness argument that
`
`Petitioners did not make and did not need to make are irrelevant.
`
`II.
`
`CLAIM CONSTRUCTION
`
`The Claim Construction section of Papst’s Response (p. 12-15) contains lit-
`
`tle of Papst’s actual claim construction arguments. Instead, Papst attempts to re-
`
`write the “automatic file transfer” claim limitation in its Argument section.
`
`What Papst did say in its Claim Construction section was perplexing. For
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`the term “without requiring any end user to load software,” Papst agrees with the
`
`Board’s construction, but then attempts to append qualifiers. Because both Papst
`
`and Petitioners agree with the Board’s construction, they should stand as is. See
`
`SAS Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016)
`
`(the Board should not adopt a new construction in its Final Decision without prior
`
`notice to the parties).
`
`The “automatic file transfer process” limitation of all Challenged Claims re-
`
`quires a processor capable of performing “an automatic file transfer process
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`Petitioners’ Reply to Patent Owner’s Response
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`“wherein the processor is further configured and programmed to …. allow the at
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`least one file of digitized analog data… to be transferred to the com-
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`puter….whereby there is no requirement for any user-loaded file transfer enabling
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`software to be loaded on or installed in the computer,” or substantively identical
`
`language. ’746 patent, claim 1, 31, and 34; Petition at 57-58.2
`
`The Board construed the negative “without requiring…” clause as “without
`
`requiring the end user to install or load specific drivers or software for the ADGPD
`
`beyond that included in the operating system, BIOS, or drivers for a multi-purpose
`
`2 Petitioners address the three independent claims (1, 31 and 34) collectively in this
`
`Reply. Those claims use similar language, though instead of “at least one file” of
`
`data as in claim 1, claims 31 and 34 require the even less-restrictive transfer of
`
`“data.” Papst treats these claim limitations the same, characterizing them as con-
`
`cerning the transfer of “a file of digitized analog data.” Response at 1-2. Papst’s
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`expert witness, Mr. Gafford, also treated all the claims as concerning a file transfer
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`operation. Ex. 2005 at ¶¶50-51. He testified that his arguments were the same for
`
`the ’746 Patent and the related patent 8,966,144, the subject of IPR2016-01199,
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`which uses the “at least one file” language in all claims. Ex. 1013 at 40:6-41:2,
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`41:19-25.
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`interface or SCSI interface.” Paper 8, (“Decision”) at 7-9. Thus, if automatic file
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`transfer can occur via drivers or software in the operating system, BIOS, or for a
`
`multi-purpose interface or SCSI interface on the computer, then the claim language
`
`is satisfied.
`
`Neither Papst nor Mr. Gafford expressly disagrees with the Board’s con-
`
`struction. Response at 14-15; Ex. 1013 at 52:11-53:6. Nevertheless, Papst argues
`
`in one sentence that “a driver for a multi-purpose interface or SCSI interface that
`
`must be installed by a user would be inconsistent with these limitations.” Id. The
`
`Board’s construction does not include some SCSI drivers while excluding unspeci-
`
`fied others. Regardless, the ASPI drivers disclosed in Aytac that are used in the
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`Petitioners’ obviousness combination meet the claim language even using Papst’s
`
`unjustified qualification. See infra Section III.A.
`
`Papst’s other (implicit) claim construction argument—on which Papst’s pri-
`
`mary patentability argument depends—is that the “automatic file transfer process”
`
`requires the ADGPD to “reliably transfer data,” which in turn requires the abilities
`
`of (a) “synchroniz[ing] multiple requests” to the ADGPD’s memory by the com-
`
`puter and ADGPD’s processors simultaneously and (b) avoiding incorrectly ac-
`
`cessing cached files on the computer. Response at 2, 25-30; Ex. 2005 (Gafford
`
`Decl.) at ¶¶ 41-44, 54, 58-60. These advanced functions simply are not elements
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`Petitioners’ Reply to Patent Owner’s Response
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`of the Challenged Claims, and thus they cannot make patentable the Challenged
`
`Claims.
`
`The Challenged Claims only require the capability to transfer “at least one
`
`file” from the ADGPD to the computer (or the even less restrictive “data” in claims
`
`31 and 34). As a matter of law, and as acknowledged by Mr. Gafford, this is satis-
`
`fied by the capability to transfer just one file. Z4 Techs., Inc. v. Microsoft Corp.,
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`507 F.3d 1340, 1349 (Fed. Cir. 2007) (“use of the phrase ‘at least one’ means that
`
`there could be only one or more than one”); Ex. 1013 at 51:23-52:6. All the sup-
`
`posed faults in an Aytac system lacking user-loaded software concern functions be-
`
`yond the claimed ability to transfer “at least one file.” Aytac accomplished these
`
`functions through additional software components, because Aytac specifically rec-
`
`ognized and addressed the possibility of multiple simultaneous file transfer re-
`
`quests and erroneous cache access.
`
`As is clear from the claim language itself—and confirmed by Mr. Gafford’s
`
`deposition testimony—the Challenged Claims do not incorporate concepts of “syn-
`
`chronization” between multiple simultaneous requests to the ADGPD, cache disa-
`
`bling/clearing on the computer, or any standard of “reliability,” thus undercutting
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`Papst’s entire argument. Ex. 1013 at 52:7-10 (Gafford testimony) (“Q. Does claim
`
`1 of the '746 patent specify any degree of reliability for the file transfer process?
`
`A. It doesn't speak to reliability. It just says it happens.”); 56:18-23 (agreeing that
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
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`the claims do not require multiple sensors; hence they cannot require synchroniza-
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`tion between multiple sensors writing simultaneously to the ADGPD). Regarding
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`synchronization, Mr. Gafford acknowledged
`
`Q. Claim 1 of the ’144 patent does not require the computer's proces-
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`sor and the ADGPD’s processor to access the ADGPD’s data storage
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`memory at the same time; correct?
`
`A. Correct.
`
`(Id. at 57:-11). These concepts are not mentioned in the ’746 patent’s disclosure,
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`much less solved by its teachings.3
`
`3 The ’746 Patent’s system allows both the computer and ADGPD processors to
`
`access the ADGPD’s memory simultaneously. See Ex. 1003 at 6:42-45, 6:60-7:2,
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`7:46-50 (describing computer creating files on the ADGPD); Ex. 1003 at 11:65-
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`12:4 (claiming the ADGPD’s processor storing files into the ADGPD’s memory);
`
`Ex. 1001 at ¶¶ 68-72 (explaining the file transfer process). The ’746 Patent dis-
`
`closes no way to clear/disable the computer’s cache or to synchronize multiple
`
`simultaneous processor requests to the ADGPD’s memory. Thus, alleged “reliabil-
`
`ity” problems would plague the ’746 Patent’s disclosed systems to the same extent
`
`they would an Aytac system lacking CATSYNC.VXD. Ex. 2006 at 92:3-10.
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`Petitioners’ Reply to Patent Owner’s Response
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`Under Federal Circuit precedent, Papst cannot rely on these unclaimed “relia-
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`bility” features to stave off unpatentability. Geo. M. Martin Co. v. All. Mach. Sys.
`
`Int’l LLC, 618 F.3d 1294, 1302–03 (Fed. Cir. 2010). In Martin, as here, the pa-
`
`tentee tried to defeat obviousness by arguing that the prior art was not “reliable.”
`
`Id. “If the patentee intended to claim an improvement that included a structure for
`
`‘reliable breaking’ measured against some kind of commercial production stand-
`
`ard, it should have explicitly done so or argued on appeal for a construction … that
`
`contains such a standard. The record shows that the [patentee] did neither.” Id.
`
`Moreover, “without requiring” does not mean “prohibiting,” as the Federal
`
`Circuit has made clear. Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922,
`
`926-27 (Fed. Cir. 2012). It is irrelevant to the Challenged Claims whether “file
`
`transfer enabling software” is present on the computer. Rather, the question is
`
`whether such “file transfer enabling software” is required to be installed on the
`
`computer as a necessary condition to receiving a file from the ADGPD. Again,
`
`Mr. Gafford concurs with this claim interpretation. Ex. 1013 at 53:7-21.
`
`A simple analogy illustrates the negative claim limitation at issue here. Con-
`
`sider a claim to a new web browser that allows a user to “open at least one
`
`webpage without requiring additional software to be installed.” A prior art web
`
`browser also allows a user to open webpages, but has an additional feature of a
`
`pop-up blocker. The pop-up blocker intercepts all page load requests on the
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
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`browser to determine if additional open new page requests (i.e., pop-ups) are pre-
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`sent and then blocks those pop-ups. But as any common user of the internet
`
`knows, this prior art web browser opens webpages without the pop-up blocker in-
`
`stalled or with the pop-up blocker turned off. The web browser may operate less
`
`efficiently because of the pop-ups, and an explosion of pop-ups could even make
`
`the browser inoperable in some circumstances, but the browser still has the capa-
`
`bility to open “at least one webpage.” Thus, the pop-up blocker is not required to
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`open a webpage and the prior art web browser still renders unpatentable the
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`claimed new web browser. See Celsis, 664 F.3d at 926-27.
`
`The web browser example holds true for the Challenged Claims. The
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`claimed system capable of transferring at least one file is still unpatentable based
`
`on Aytac’s system that can transfer at least one file and also can incorporate abili-
`
`ties beyond those defined by the Challenged Claims. See In re Heck, 699 F.2d
`
`1331, 1332-33 (Fed. Cir. 1983) (patents used as prior art references are “not lim-
`
`ited to what the patentees describe as their own inventions or the problems with
`
`which they are concerned”); see also MPEP § 2123.
`
`III. PAPST'S ARGUMENTS ARE DIRECTED TO IRRELEVANT AND
`UNCLAIMED FEATURES; THE RELEVANT FACTS SHOWING
`UNPATENTABILITY ARE UNDISPUTED.
`
`Papst concedes most of the points raised in the Petition. The three refer-
`
`ences (Aytac, the SCSI Specification, and the applicant-admitted prior art
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
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`(“AAPA”)) are all prior art; no dispute on that point from Papst.4 Papst and its ex-
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`pert witness do not question the motivation to combine these references. Petition
`
`at 25-26 (addressing motivation to combine); see generally Response and Ex. 2005
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`(not addressing motivation). Independent claims 1, 31, and 34 include at least five
`
`separate claim elements. See Petition at 37-65. Petitioners’ proof that the prior art
`
`combination meets the elements stands unchallenged by Papst for the most part.
`
`Papst challenges only one element as missing from the cited prior art: the “auto-
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`matic file transfer” limitation discussed above. Response at 24-30.
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`4 Papst quibbled with one minor aspect of the AAPA. Response at 12 (disputing
`
`that the ’746 Patent’s disclosure at Col. 5:34-44, regarding sending a virtual boot
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`sequence, is prior art). The ’746 Patent describes this process as “conventional.”
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`Col. 5:47-55. Regardless, this argument is not relevant to the disputed issues here.
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`Additionally, while Petitioners respectfully disagree with the Board’s ruling that
`
`Aytac’s source code is not prior art, the source code merely provides supplements
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`the Aytac patent’s disclosure and is not necessary to any argument. Petition at 20-
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`21.
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`Even for this claim element, Papst does not dispute the relevant technical
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`facts about the prior art presented in the Petition. Indeed, Papst’s own expert wit-
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`ness confirmed this point in all respects, confirming the Challenged Claims’ obvi-
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`ousness.
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`Aytac, combined with details found in the SCSI Specification and the AAPA
`
`about Aytac’s disclosed SCSI communications, teaches that at least one digital file
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`can be transferred to the host computer without requiring any file transfer enabling
`
`software to be installed on the host computer. First, Petitioners focus on the
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`proper scope of this claim element showing the undisputed mapping of the prior
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`art’s disclosures to the Challenged Claims. Indeed, Papst did not even cite to, let
`
`alone rebut, these arguments. See infra Section III.A. Papst instead argues that
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`Aytac must be modified to uninstall its drivers that provide unclaimed features of
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`synchronized data transfers and cache disabling to achieve some nebulous standard
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`of “reliability.” Second, Petitioners explain why Papst’s argument fails: it de-
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`pends on unclaimed features, it misstates Aytac’s disclosure, and Aytac’s system
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`need not be modified to remove any software. See infra Section III.B and III.C.
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`A.
`
`Papst Does Not Dispute the Relevant Fact: Aytac’s System is Ca-
`pable of Automatically Transferring At Least One File Without
`Requiring any Specialized File Transfer Software, and Thus
`Meets the “Automatic File Transfer Process” Limitation.
`
`A file transfer operation will occur in Aytac whether or not CAT-
`
`SYNC.VXD is installed on the host PC. The file transfer occurs over the default
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`SCSI communication line, which is LUN0. Dr. Reynolds confirmed this technical
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`fact, Papst solicited no contrary testimony during Dr. Reynolds’ deposition, and
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`Mr. Gafford did not offer any contradictory testimony. Thus, it stands unrebutted
`
`that Aytac could transfer a file without requiring any specialized file transfer soft-
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`ware.
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`Dr. Reynolds explained step-by-step how Aytac’s interface device would
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`transfer a file regardless of whether the CATSYNC.VXD file was installed on the
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`computer. Ex. 1001 at ¶¶96-105. Aytac handles a file transfer request according
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`to the SCSI protocol. Id. An INQUIRY command is used to identify the target de-
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`vice and other required data. Ex. 1001 at ¶¶99-100. Once the INQUIRY com-
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`mand establishes communication, the SCSI protocol permits READ and WRITE
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`requests to and from the CaTbox. (the device analogous to the ‘746 Patent’s
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`ADGPD). Id. These READ and WRITE commands are processed over Logical
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`Unit Number 0 (LUN0) in order to transfer a file. Ex. 1001 at ¶¶99-100, 118.
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`LUN0 is available on a device that implements SCSI and is the default for commu-
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`nications when a LUN is not specified. Ex. 1001 at ¶118. Importantly, this back-
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`and-forth is exactly the same as the ‘746 Patent’s file transfer. Ex. 1001 at ¶¶101-
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`102, 117. Thus, Aytac’s system could (and would) implement the “automatic
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`transfer process” using only the SCSI protocol if CATSYNC.VXD were not in-
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`stalled. This proves that CATSYNC.VXD is not required to implement a file
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`transfer.5
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`Dr. Reynolds’ explanation shows that CATSYNC.VXD is similar to the
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`pop-up blocker in the analogy above. CATSYNC.VXD’s function is to intercept
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`file requests and synchronize them to avoid potential conflicts on the CaTdisc (the
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`CaTbox’s memory) Ex. 1001 at ¶101. It does this by re-routing requests over dif-
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`ferent LUNs on the SCSI interface. Id. However, CATSYNC.VXD is not needed
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`to transfer a file over the default LUN0. Ex. 1001 at ¶¶101, 114-115.
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`5 Papst also briefly mentions two other programs on the PC in Aytac’s disclosed
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`embodiment, CATCAS.EXE and CATSER.VXD. Neither are relevant here.
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`CATCAS.EXE is only used in one embodiment and only when a Windows fax
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`program attempts to send a fax to the CaTbox. As Mr. Gafford testified,
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`CATCAS.EXE would not be involved in other types of file transfers. Ex. 1013 at
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`48:25-49:14. CATSER.VXD only implements a remote modem function (CaT-
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`modem) CATSER.VXD only implements a remote modem function (CaTmodem).
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`Ex. 1004 at 11:38-57. As Mr. Gafford testified, CATSER.VXD would not be in-
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`volved in file transfers from CaTbox to the computer, e.g., transferring a file of
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`scanned data. Ex. 1013 at 49:15-50:3.
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`Petitioners’ Reply to Patent Owner’s Response
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`Papst and Mr. Gafford do not rebut Dr. Reynolds’ testimony regarding the
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`ability of Aytac’s system to transfer “at least one file.” Mr. Gafford’s silence tac-
`
`itly admits that Dr. Reynolds correctly described how Aytac’s system could trans-
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`fer a file using just the SCSI drivers without CATSYNC.VXD. Mr. Gafford and
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`Papst do not dispute this process would be the same as the ‘746 Patent’s file trans-
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`fer, a point the Petition and in Dr. Reynolds’ emphasized. Ex. 1001 at ¶¶101-102,
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`117; see also id. at ¶¶67-73, 87. Instead, Mr. Gafford argues that CAT-
`
`SYNC.VXD is required to perform Aytac’s synchronization and cache-disabling
`
`functions, and it would not have been obvious to remove CATSYNC.VXD. Ex.
`
`2005 at ¶¶37-45, 54, 57-61. This argument cannot save the claims for the reasons
`
`discussed in the next section.
`
`The only drivers needed on the PC to effectuate file transfer in the Aytac
`
`system are the customary ASPI drivers for SCSI interfaces and hard disks (ASPI-
`
`DISK.SYS and ASPI2DOS.SYS). Ex. 1001 at ¶¶42, 62, 89, 96-104, 117. These
`
`are drivers “for a multi-purpose interface or SCSI interface” and thus fall within
`
`the exceptions to the “without requiring any end user to load software” in the
`
`Board’s unchallenged construction. See Decision at 7-9. Papst—though not Mr.
`
`Gafford in his declaration—half-heartedly argues that Aytac’s ASPI drivers do not
`
`meet the “without requiring…” limitation. Response at 29-30. Papst’s argument is
`
`untenable under the Board’s construction.
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`-14-
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`Papst also twists Dr. Reynolds’ testimony; far from supporting Papst, Dr.
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`Reynolds confirmed that ASPI drivers are not required to be installed by end users.
`
`Ex. 1001 at ¶117; Ex. 2006 at 85:5-86:19. Papst also ignored that the ‘746 Patent
`
`admits that SCSI interfaces and ASPI drivers on PCs. Ex. 1003 at 3:49-65, 8:40-
`
`41, 10:14-24. It is indeed informative that both Aytac and the Tasler patents dis-
`
`close using exactly the same ASPI drivers. Ex. 1003 at 10:20-58, 11:5-9; Ex. 1004
`
`at 10:52-57. Thus, even if the Board had not explicitly exempted drivers for SCSI
`
`interfaces from the “without requiring…” limitation, the evidence shows that the
`
`ASPI drivers disclosed in Aytac are not required to be loaded by any end user and
`
`thus Aytac meets the claim language.
`
`Mr. Gafford foreclosed any resistance Papst could have offered on this point.
`
`He acknowledged that, as of the ’746 Patent’s priority date, SCSI interfaces were
`
`present on most PCs. Ex. 1013 at 43:19-44:3. ASPI drivers for those SCSI inter-
`
`faces also were normally included by the manufacturer of the SCSI interface. Id.
`
`at 44:6-13. And SCSI interfaces were industry standards, operational in computers
`
`made by different manufacturers. Id. at 44:14-21.
`
`B.
`
`The “Synchronization” and “Cache” Concerns Addressed by Ay-
`tac’s Advanced System are Not Implicated by the ’746 Patent’s
`Claimed File Transfer.
`
`Papst’s arguments directed to the two problems of cache clearing/disabling
`
`and “synchronization,” and the accompanying purported lack of “reliability” in an
`
`-15-
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`Aytac system lacking CATSYNC.VXD, fail to rebut Petitioners’ proof of obvious-
`
`ness for a several reasons.
`
`First, and most importantly, Papst does not attempt to tie these arguments to
`
`the Challenged Claims’ language. As Section II supra discusses in detail, the “au-
`
`tomatic file transfer” limitations require the ability to transfer “at least one file” (or
`
`just “data”). They do not require synchronization of multiple attempts to access
`
`the ADGPD’s memory, or cache clearing/disabling, or any particular degree of “re-
`
`liability.” Mr. Gafford’s testimony is not tied to Challenged Claims’ limitations
`
`and finds no support in any broader disclosure in the ‘746 Patent’s specification.
`
`Again, during his deposition, Mr. Gafford admitted that the ‘746 Patent does not
`
`claim a “reliable” or a “synchronized” file transfer system because it only requires
`
`that the system be capable of transferring “one file.” Ex. 1013 at 52:2-10, 56:18-
`
`23, 57:4-11
`
`Papst never asserts that Aytac requires specialized software to transfer “at
`
`least one file.” Papst and Mr. Gafford never contend, and could not contend credi-
`
`bly, that the Aytac system would be unable to transfer a file absent CAT-
`
`SYNC.VXD. This tacit admission by Papst alone dooms Papst’s arguments on this
`
`point.
`
`Second, Mr. Gafford admitted that the Aytac system could transfer “at least
`
`one file,” or “data,” absent CATSYNC.VXD, without encountering the alleged
`
`-16-
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`cache, “synchronization,” and “reliability” problems. To start, Papst alleges only
`
`two problems that would cause a lack of “reliability” in Aytac’s system without
`
`CATSYNC.VXD: (1) accessing “stale” data in the PC’s cache instead of the file
`
`on the CaTbox and (2) errors resulting from lack of synchronization between the
`
`PC and CaTbox’s processors simultaneously attempting to access the CaTbox’s
`
`memory. Response at 25-28. Mr. Gafford confirmed that these are the only two
`
`reasons why he thinks Aytac would be unreliable absent user-loaded specific soft-
`
`ware. Ex. 1013 at 48:13-24.
`
`The alleged “cache” problem, by necessity, could only happen after the
`
`CaTbox transferred at least one file to the PC and thus already satisfied the “auto-
`
`matic file transfer” limitation. Mr. Gafford’s description of the “cache” problem in
`
`his declaration makes this clear: “if a fax or voice message is stored in a file on the
`
`CaTdisc and the host computer reads it without CATSYNC.VXD installed by the
`
`user, a copy of that file will be saved in the OS memory cache by the OS file sys-
`
`tem. The next time that file is accessed by a user program running in the host PC, it
`
`will not access the CaTdisc, rather, it will access the cache and get potentially stale
`
`data.” Ex. 2005 at ¶44 (emphasis added). Mr. Gafford thus admitted that the file
`
`would have been transferred to the computer, with the “cache” problem possibly
`
`arising only on a subsequent file transfer attempt. He confirmed this understanding
`
`-17-
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`
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`in his deposition testimony. Ex. 1013 at 46:11-47:10. The “cache” problem, then,
`
`is irrelevant.
`
`The “synchronization” problem also is irrelevant to the Challenged Claims.
`
`In Mr. Gafford’s own telling, this problem would only arise if the PC and CaT-
`
`box’s processors both simultaneously accessed the CaTbox’s memory. Ex. 2005 at
`
`¶60 (“Because both the host PC processor and the CaTbox processor may access
`
`the CaTdisk hard drive and only one processor may access the CaTdisk at one time
`
`CATSYNC.VXD is implemented to synchronize the two processors’ access of the
`
`CaTdisk to avoid conflicts.”) Of course, this simultaneous access would not hap-
`
`pen every time the PC accesses the CaTdisk to transfer a file, meaning it does not
`
`prevent the transfer of “at least one file.” This is why Papst and Mr. Gafford say
`
`that errors “could” occur without CATSYNC.VXD; they also might not occur. See
`
`Response at 26; Ex. 2005 at 60.
`
`Here again, Mr. Gafford’s deposition testimony confirms that “synchroniza-
`
`tion” is not necessary to transfer a file. He agreed that “[t]he host computer’s pro-
`
`cessor could attempt to access the CaTdisc at a time when the CaTbox’s processor
`
`was not also attempting to access the CaTdisc.” Ex. 1013 at 47:11-48:12. Dr.
`
`Reynolds made this point clear as well in his deposition testimony. Ex. 2006 at
`
`90:3-22; 92:2-25; 98:3-8; 101:5-18. Thus, in the proper context of the Challenged
`
`-18-
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`
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`IPR2016-01200
`Petitioners’ Reply to Patent Owner’s Response
`
`Claims, both experts agree that CATSYNC.VXD is not required to transfer at least
`
`one file.
`
`Also, Gafford admits that Aytac’s CaTbox could “reliably transfer good data
`
`without using CATSYNC.VXD,” if acting as a remote hard disc for the PC. Ex.
`
`2005, ¶60. While Papst contends this embodiment would “completely cut[] against
`
`the whole point of Aytac’s disclosure,” (Response at 26), that is not true. Aytac
`
`explicitly discloses this remote hard disc example as one advantage of its inven-
`
`tion. “The PC may not even have a hard disk: it could use the CaTdisc as a hard
`
`disk. CaTbox stays put to receive voice, fax, and email messages.” Ex. 1004 at
`
`5:57-61.
`
`C.
`
`No Modification of Aytac is Required.
`
`As the foregoing sections make clear, Aytac’s systems do not need to be
`
`“modified” to remove CATSYNC.VXD or any other software to effectuate the
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`“automatic file transfer” claimed in the ‘746 Patent. And Petit
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